Hmmmmmm…. that’s a very interesting concept. I suppose, that if your purpose is just “first to invent” (proof of date), that may SEEM reasonable, however – there really is no benefit of a “first to invent”, unless you plan to file a non-provisional patent application or you’re looking to eliminate the possibility of someone else patenting the invention. Problem is, the USPTO literally does not even look at your provisional until if/when you file a referencing non-provisional application(otherwise the provisional is obsolete after 12 months anyway). Also, if/when a non-provisional application is filed, it is likely that the examiner will request that you choose a single invention (you can only patent ONE invention with a given application). All that being said, I see no benefit to filing a provisional with multiple “inventions” – though I’m sure others will have some thoughts. I like the question though… it shows that you’re really thinking.

I should say, I am not a patent attornry (nor play one on TV). I have plenty of experience filing and arguing ALL of my own applications (provisional and non-provisional). You’re right, unless you have an intimate understanding of the patent application concept/process, it’s risky doing your own.

In the PPA you have to name your invention and include at least one embodiment. It seems if you describe and show multiple embodiments and all have something in common with your main invention, but are really standalone inventions then it seems you have created a viable PPA that you can derive multiple patents from. Take a look at: http://marburylaw.com/files/howmanypatentsdoyou... for more information. Probably best to talk to a patent attorney or agent to be sure.

Filing a patent application on more than one invention is possible,as long as they have the ability to work in combination with each other allowing both embodyment’s to still function when seperated from each other still having a use without anything being obvious or prior art getting in the way.

Shisya,

Correct me if I am wrong, but the point of your question was to determine if you can lump multiple unrelated “INVENTIONS” (not “embodiments” or “components”) together into one provisional application… By definition of the word “Invention” (as defined by the USPTO), you can only include one “invention” in any given application. Now, you can have multiple individual “embodiments” and/or related “components”, but you can only have ONE invention. Otherwise, the examiner will likely issue a requirement for an “restriction/election” to a single invention. This has happened to me several times in the past – see 35 U.S.C. 121.

I dont see anything in the original post that mentions (unrelated) inventions. It is possible to have 2 different inventions in one application. Your not able to pull it off in most cases but its possible That’s why its important to use a good patent atttorney or agent. . I have used both,I found a patent agent that’s a retired mechanical engineer that studied IP Law. He has the ability to understand the concept much better. He is way up in his 70’s and smart as a whip……

Example: Flipable screwdrivers. The flipable screw driver hexed shaft that holds different bits. It goes inside the handle that has a female hex opening inside it.
Can the handle with the female hex opening be consider one invention. SURE..at that point its a nut driver for one size hexed nut. Can the flipable screw driver hexed shank shaft that holds the bits be considered a seperate invention…sure it can….It can be inserted into a drill chuck and have the same end results without the driver handle. If you use both of them in combination you really have 2 inventions in one at the end of the day.
Can you combine 2 unrelated ideas together…..No…….It"s all in how your plan of attack is to get 2 inventions past the examineer in one application. But it can be done, there thousands of examples out there.

I have a couple of question sof provisional patents

1) Is there a way I can put my provisional through online? May be through some form on USPTO site…

2) I hear writing the provisional yourself doesnt really get you the protection you need, unless you are really good at writing patents and the only benefit for novice inventors is that they get date on invention, which could come in handy.

Considering that, if all I needed is a proof of date of invention, why not just bundle up multiple inventions in the same patent and put them through?

My initial reason for filing multiple unrelated submissions in the same provisional was just to get a proof of invention date.

Once I accomplished that, I figured I could at a later time go ahead and file the provisional for individual submissions.

The thing that probably puts a wrench in my plans is that fact that I have am obligated to convert the original multiple submission provisional to non provisional in one years time. Now, is that really mandatory?

Also, Is there some way to file the provisional online?

Gizmo,

I suggest that you talk to your patent attorney for clarification… Again, an “invention” is clearly defined in the USPTO rules and per the Examiners Manual, only a single invention (by definition)is allowed in a given application – PERIOD. Now, of course a single invention can have many features, embodiments, etc.. that may in fact be unique, but when it’s all said and done, only a SINGLE INVENTION can be claimed in an application. Now, you can call those “features”, "embodiments, etc. “inventions” “hamburgers”, “darts” or whatever you want to call them, the fact is that they are not "inventions (by definition). The gentleman’s question was quite clear. Can he "bundle up multiple INVENTIONS in the same patent. No matter how you try to split-hairs.. the rules are quite clear. When a patent is issued, the inventor has a patent on a SINGLE “Invention” (which may have a plurality of features and benefits). Respectfully Yours :)

Shisya,

The 12 month period for Provisional to Non-provisional is in fact ABSOLUTE (no exceptions).

Yes, you can file a provisional online.

BTW – A provisional does not necessarily prove first to invent. First to invent is contested all the time – even with a non-provisional application.

This sounds like a good idea for establishing an early priority date on mutable idea’s related or not.

I prefer the inventors bond note book over a provisional patent for the proof of an early priority date.
The note book is free! This will change when first to apply for a patent comes to america.

No matter which one you do, I think if you added one long claim that describes the hole structure in a clear operable way for each idea that’s entered to your one provisional patent, or note book (don’t for get to name all there connection points if theirs mutable parts).
It would only benefit you in the event of an infringement suit if that were to arise.

KJ, my first patent attorney yrs ago pulled the scenerio off for me years ago. It wasnt the exact one above but similar thats how I know it works. I remember him saying it may not go through as one invention lets see what happens. After the patent issued, he was more concerned about the PCT than the USPTO. That one I still dont understand fully. I remember asking him why wouldnt it if the USA issed it.All I got was a bunch of legal crap I didnt understand anyway. The PCT did go through in the end…..WOW PCT’S apps is where you spend the big bucks. You cant even read the euro crap when you are approved. I have some in japanees etc….

Todd your right the notebook is a good choice if it’s filled out correctly. The problem for all of us is if there is an infringment lawsuits are very expensive. Actually unless you have a patent Im not so sure infringment is the word to use. I think you need to have at least a patent approval to even send out a cease and desist order. Not 100 % sure though, never been in that situation..

The only way to possibly pull this off is to file a PCT international patent application first and having the WIPO (Sweden patent office will examin I think) examine your patent in Europe as the primary examiners and then file in the U.S. after but then you are in for foreign patents.

I have heard from my patent agent..you know who that is Jeeth….that the European patent offices are less likely to break up patent apps that might have multiple inventions.

I don’t remember the exact details of this as stated in the first paragraph but the information is generally accurate.

You can claim two inventions in a way if one can’t be patented. For very good instance, many times hook and loop fastener will be mentioned in a patent app, and it was a patented invention years ago, so you would be mentioning two inventions but of coarse only claim one.

Ron Komorowski
Inventor of Handi-Straps
www.handi-straps.com

Thanks for all the info guys.

When you guys use a journal, do you get it signed by a witness?

Does it matter who the witness is? As in, if its a close friend or family member, it would be argued that they had a vested interest in your success so might help you manipulate things.

Just a thought…

Also, I found the online provisinal application tool here at

http://www.uspto.gov/ebc/indexebc.html

Is there any harm in me submitting my provisional myself, instead of using a software that helps me submit things?

I think the USPTO link only provides an interface to submit the application and may not probe me and help me write a “complete and good” provisional application. Other than that, do you guys see any problems?

Ron thats close to what I remember. I just remember my attorney having more conserns with the WIPO catching it than the USPTO

Who the witness is does matter. Has to be some one who does not have a vested interest. Some folk even get the pages notarized. For filing a PPA, I was using Word to create the PDF document and use the PTO website to do the upload. I just got the PatentEase software for writing utility patents and PPA. It does not upload the applications to the PTO, which is fine with me. I was more interested in the format and their techniques for claims writing.

Dond, I agree it should matter who the witness is. I have close friends that are notaries. I wont let them notarize my doc’s. Can you imagine the can of worms that can come out if you had your spouse notarize the doc’s. You can do everything right and still be looked at in court like you did once the attys get involved…..Only in the USA………

Thanks Dond.

I am at the online form for filing the provisional.

Am I expected to file 2 documents? One for cover letter and other for the contents (diagrams and descriptoin) of the application?

Also, it asks me for Category and Document description.

Do you know which ones to select for a new provisional application?

My gut tells me I should put in 2 documents one for cover letter (Category: General Transmittal ; Document Description: Provisional Cover Letter) and other for descrpition and digs (Category: General Transmital ; Document Description: Transmittal of new application)

Any thoughts?

Thanks in advance.

Ron: I know who you are talking about. ;)

Hi Shisya, I created a single pdf with a signed cover application (SB16), followed by the specification and the drawings so I indicated a multiple documents on the PTO web page. For the Category/Doc Description:

General Transmittal / Provisional Cover Sheet (SB 16)
Application Part/ Specification
Application Part/ Drawings – Only BW…..

The PDF file needs to have/not have embedded fonts. Not certian which, but the upload process will tell you if it likes it or not.

Hope this helps,
Don

Jeeth…I hope you are still going ahead with the original plan. I guess so. Our guy said he was working on your stuff now.

Jeeth…get these questions answered from him! He will help you and that is part of the benefit with him.

I can also mail you copies of my CRUDE provisionals or explain. I filed 3 on my own and two wer used by our friend Stan to file the full patent app off of. I also have a provisional that was written by an attorney. I didn’t ask him to write it or file it…long story…but he did and then sent me a bill for over $2000!!! I could get you a copy.

Don’t worry about provisionals. Just do the best you can. Think of it as just EVIDENCE, and the more real and raw it may be, that just may be more believable if you ever have to use it because provisionals are NOT specific enough…but I think…or believe possibly, you may get some sympathy if ever challenged on a provisional, by being a little “ignorant” about the process. They might not throw every technicality at you….BUT…I’ve never heard of a provisional application going to court…a definite REAL LONG shot.

I wouldn’t explain too much in a provisional either…you can get too precise and mess up what you can claim in the full patent app.

I think a provisional is just a warning to others that you are serious about taking the necessary steps to protect your intellectual property. The document itself, maybe only good for a paper airplane other than claiming a priority date.

Shisya,

Do not underestimate the importance (weight) of a provisional. Actually, the thought into developing an effective provisional is atleast 90% of the thought required for a non-provisional. The reason is, that you will not be able to add ANY new matter if/when you decide to develop/file the non-provisional. IF there is ANY new subject matter that was not mentioned or atleast implied in the provisional, you will not be able to claim the priority date of the provisional and it will be as if you never filed a provisional at all (or you can remove the new matter from the non-provisional). The reason for the provisional is to allow you to submit an “informal” filing as early as possible without major expense, thus perhaps allowing you to validate your invention in the marketplace prior to making a major investment. For the reason stated above, My provisional is usually 95% of the final content of the non-provisional. (The other 5% is usually cleaning up the drawings, and final check of format and grammar). In fact, in many instances, I can simply convert my provisional to the non-provisional since the content is basically complete. I know it’s easy for me to say since I can do all my own patent apps. but , I just want you to understand the importance of the provisional.

Not to muddy the water, I know you’re just looking to use it as a means for a first to invent dtae, but I can actually envision a situation when your provisional can actually work against you. For example, if you were to argue your provisional as your defense/offense for first to invent and your final invention includes matter/material which was not mentioned in your corresponding provisional, it may render your entire provisional evidence/argument as obsolete and irrelevant (since your provisional does not back-up your final invention).

Anyway…. I won’t go on and on, but just something to consider. Again, I am not an attorney or agent, so you would be wise to seek professional counsel.

Actually….you can include multiple unrelated inventions in a provisional application…its the non-provisional stage where those invention specific rules matter…and even in the non-provisional stage you can file a patent application covering multiple unrelated inventions, and then file subsequent “divisionals” or “continuations” claiming priority to that patent application (even if the initial application won’t issue as is).

Of course if your provisional application is professionally filed, it won’t save you that much money to do so because the bulk of what you will be paying is your attorney/agent’s hourly fees and not the USPTO filing fees. And, if you do go the attorney route, it can be more cost effective over time to file a non-provisional application off the bat.

And note that often, the reason why most provisional applications wouldn’t hold up in court, is that they don’t legally meet the criteria necessary to legally serve as proof of invention. A disclosure in an inventors notebook must meet the same standards as a patent application (claims aside) to really establish proof of invention, and not just serve as prior art.

Lastly…

http://sousei2.doshisha.ac.jp/kiyou/7pdf/7kawau...

Between 1991-2000, more than two million US patent applications were filed. Of those two million filings, less than two thousand led to interference proceedings, of which, traditionally, the “first to file” party tends to win about 75% of the time. So, while the US is technically a “first to invent” country, you still don’t necessarily want to put too much weight into having to prove “invention” as opposed to filing.

Criterion,

I totally agree with what you’ve stated and it does not contradict anything that I have stated in my previous post. You can file anything (with numerous inventions), BUT the question is… does any given application allow you to patent (claim) multiple inventions and the answer of course is NO. The USPTO will force you to claim a single invention one way or another.

Note the following DETAILED explanation hereby credited to Gallagher & Dawsey Co. ….

TITLE: Continuing Patent Applications – What Are They & When Are They Appropriate:

The term “continuing application” is a common term in intellectual property, yet it is often misunderstood and incorrectly applied. This is primarily due to the number of changes in the rules governing continuation practice that have occurred in the past decade.

Most patent applications are filed as “original” applications. In other words, they establish their own filing date and do not have an effective filing date based upon another previously filed application. If an “original” application is then used to establish an effective filing date of a later filed application, it becomes known as a parent application. Such later filed applications may take many forms.

Continuation Applications
First, and perhaps the most straight-forward continuing application, is a continuation application. Continuation applications utilize the parent application’s disclosure and claim the benefit of the parent application. In order for a continuation application to be granted the filing date of the parent application it must: (1) be filed while the parent application is pending, (2) have at least one inventor in common with the parent application, and (3) have claims that are fully supported by the parent application’s disclosure. The term “pending” in requirement (1) above is the cause of great confusion and deserves special attention. The term “pending” does not mean that the “original” application must still be pending. It simply requires that any application in the parent application and continuation application relationship is still pending.

Divisional Applications
A divisional application is a second type of continuing application and is a specific type of continuation application. The Patent Office commonly finds that an application impermissibly claims more than one invention. Upon this finding, the Patent Office issues a Restriction Requirement that requires the applicant to choose one of the disclosed inventions for prosecution and to remove the claims directed to the other invention. The applicant may then file a divisional application at any time during which the parent application is pending wherein the claims that were removed from the original application are resubmitted.

Continuation-In-Part (CIP) Applications
The third available continuing application, known as a CIP application, contains the parent application’s disclosure PLUS additional disclosure. Claims that are supported by the parent application’s disclosure may obtain an effective filing date of the parent application, however claims that are supported by the additional disclosure may not obtain the effective filing date.

Continuing Prosecution Applications (CPA’s) & Requests for Continued Examination (RCE’s)
In addition to the three types of continuing applications previously described, there is a second mechanism available for filing continuing applications that is known as the CPA. The CPA is currently not of much significance because it is being phased out and may not be used with applications, other than design patent applications, that were filed after May 28, 2000. The RCE is the replacement for the CPA. The RCE may be used with any application filed on or after June 8, 1995, except design patent applications. The purpose of both the CPA and RCE applications is to allow an applicant to file an application to keep the prosecution of a parent application alive after it has received a final rejection from the Patent Office. These applications stay with the same Examiner that was reviewing the parent application and keep the same serial number, yet the final rejection of the parent application is removed. CPA’s and RCE’s can be thought of as simply paying an additional fee to buy another full examination of an application.

So What Is The Benefit?
Continuation practice is all about strategy, a strategy that should be developed in close cooperation between the applicant and their patent attorney. In developing a strategy for a family of related inventions, one must consider the advantages and disadvantages of obtaining an earlier effective filing date. Ask yourself, what am I gaining by filing a continuing application rather than an original application?

In answering this question, it is necessary to keep in mind that a patent term is 20 years from the filing date of the earliest filed parent application. Therefore, filing a continuing application, rather than an original application, has the potential to reduce the life of a subsequently issued patent. However, a continuing application may need the effective filing date of the parent application to overcome recent prior art or other statutory bars.

Another consideration is the potential risk of others designing around your patent. If this is a substantial risk, it may be worth using continuation applications to ensure the disclosure of the original application is always pending. The benefit is that if a competing product has designed around the original patent, the claims of the pending continuation application may be modified so as to ensure infringement if a patent should issue. Of course, the modified claims must be supported by the disclosure.

A further consideration is that of commercialization. Patent applications are typically written as broadly as possible and for this reason are met with resistance in the Patent Office. The Patent Office will often allow the narrow claims of an application while rejecting the broader claims. When an applicant has a particular product with immediate commercial potential, it may be wise to delete the broad claims during prosecution to obtain a patent on the narrow claims covering the specific product. The broader claims can be filed in a separate continuation application, with the commercial product being protected in the meantime.

Each of the applications described herein has unique procedural requirements and deadlines that are beyond the scope of the present article and should be discussed with a patent attorney.

http://www.invention-protection.com/ip/publicat...

© 2002, Gallagher & Dawsey Co., LPA
September 2002